A Board of Appeal at the EPO has referred questions to the Enlarged Board of Appeal (EBA) in connection with inconsistencies between the claims and description of a European patent vs. those of a European patent application (pre-grant vs. post-grant).
The following questions have been referred to the EBA (referral pending under: G 1/25 - “Hydroponics”).
- If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
- If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
- Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?
Present case
The referral came from case T 697/22. In the interlocutory decision it was felt that there is divergent case law on the consideration of inconsistencies between the scope of protection defined by claims and the description for pre-grant and post-grant proceedings.
Usually in post grant proceedings if deciding Boards of Appeal (BoAs) find inconsistencies between the claims and the description / drawings, the deciding BoA holds that the claim request is unallowable. This non-compliance typically leads to the revocation of the patent. (the referral briefly draws on recent decision G 1/24 which cleared up any inconsistent approach in the consideration of the extent of protection conferred by the claims (viewed and interpreted in light of the description / drawings) of a European patent, for the purposes of patentability).
For certain pre-grant appeal proceedings, deciding BoAs have, in some cases, not supported a requirement to bring the description into agreement with claims intended for grant by deleting or disclaiming subject-matter in the description which is not claimed.
The referral is intended to clarify the position on description amendment and claim alignment in pre-grant (examination stage) and post-grant proceedings (such as oppositions / appeals) before the EPO.
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